Ex Parte Baniel et al

Board of Patent Appeals and Interferences

Dec 7, 2007

11352593 (B.P.A.I. Dec. 7, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte AVRAHAM M. BANIEL,
ROBERT P. JANSEN, ASHER VITNER,
and ANTHONY BAIADA
______________

Appeal 2008-0512
Application 11/352,593
Technology Center 1700
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Decided: December 7, 2007
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 3 through 10, 16 through 24, and
27 through 32 in the Office Action mailed August 3, 2006. 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.

Appeal 2008-0512
Application 11/352,593
Claim 3 illustrates Appellants’ invention of a process for recovery of
1,3-propanediol from a fermentation broth, and is representative of the
claims on appeal:
3. A process for the recovery of 1,3-propanediol from a fermentation
broth comprising 1,3-propanediol, comprising the steps of:
contacting a fermentation broth that comprises water,
1,3-propanediol, and at least one contaminant selected from glycerol,
glucose, and butanetriol, with at least one solvent extractant to form a first
mixture, wherein the solvent extractant is selected from the group consisting
of pentanol, propan-1-ol, hexanol, oleyl alcohol, 4-methyl pentan-2-one,
isopropyl acetate, tributyl phosphate, oleic acid, soya oil, castor oil, and
combinations thereof,
separating the first mixture into a first phase and a second phase,
wherein the first phase comprises a majority of the solvent extractant
and at least some of the 1,3-propanediol that was present in the fermentation
broth, and the weight ratio in the first phase of 1,3-propanediol to at least
one of glycerol, glucose, or butanetriol is greater than the weight ratio of
1,3-propanediol to the same contaminant in the fermentation broth prior to
the fermentation broth being contacted with the solvent extractant,
wherein the second phase comprises a majority of the water and at
least some of the contaminant from the fermentation broth,
recovering 1,3-propanediol by removing the first phase from the
second phase,
contacting the removed first phase with a first quantity of aqueous
solution to form a second mixture, and
separating the second mixture into a third phase and a fourth phase,
wherein the third phase comprises a majority of solvent extractant of
the first phase, and
wherein the fourth phase comprises 1,3-propanediol and a majority of
the first quantity of aqueous solution, and the weight ratio in the fourth
phase of the 1,3-propanediol to at least one of .glycerol, glucose, or
butanetriol is greater than the weight ratio of 1,3-propanediol to the same
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Application 11/352,593
contaminant in the fermentation broth prior to the fermentation broth being
contacted with the solvent extractant.
The Examiner relies upon the evidence in these references (Ans. 4):
Matsuyama US 5,356,812 Oct. 18, 1994
Eyal US 6,171,501 B1 Jan, 9, 2001
Ames US 6,361,983 B1 Mar. 26, 2002
Burch US 6,428,767 B1 Aug. 6, 2002
Herold US 2004/0262221 A1 Dec. 30, 2004
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal: claims 3 through 10, 16 through 24, and 27
through 32 as unpatentable over Burch in view of Ames, Matsuyama, Eyal,
and Herold. Br. 4; Ans. 5.
Appellants argue the claims as a group. Br. 4-8. Thus, we decide this
appeal based on independent claim 3. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness in the ground of
rejection advanced on appeal.
The plain language of claim 3 specifies a process comprising at least
the first step of contacting any manner of fermentation broth that comprises
at least any amount of water, any amount of 1,3-propanediol, and any
amount of at least one contaminant selected from glycerol, glucose, and
butanetriol with any amount of one or more of the specified solvent
extractants. We note here that the open-ended term “comprising” and
“comprises” used throughout the claim, opens the claim to encompass
processes that include any manner of additional steps, reagents and reactants.
See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555
(Fed. Cir. 1995) (“The claimed composition is defined as comprising-
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Application 11/352,593
meaning containing at least-five specific ingredients.”); In re Baxter, 656
F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
Thus, all that the fermentation broth must contain to satisfy the first part of
the first clause is a mixture of any amount of water, any amount of 1,3-
propanediol and any amount of one or more of the stated contaminants.
Indeed, the transitional term “comprising” would open the claim to
processes in which the fermentation broth was subjected to any manner of
clarification step to remove cell debris and other matter from the broth, and
any manner of water reduction step prior to contacting the resulting mixture
of water, 1,3-propanediol, and one or more of the stated contaminants with
one or more specified solvent extractants.
The “first mixture” formed from contacting the broth with the
specified extractant in the first step is separated into two phases by any
separation means in the specified second step. The “second phase” contains
a majority amount of the water and at least some amount, however small, of
the contaminant. The “first phase” comprises a majority amount of the
solvent extractant and at least some amount of the 1,3-propanediol, wherein
the weight ratio of the 1,3-propanediol in the first phase to at least one of the
contaminants is greater to any extent, however small, than the weight ratio of
1,3-propanediol to the same contaminant in the fermentation broth prior to
contacting the fermentation broth with the solvent extractant to form the
“first mixture,” regardless of the difference.
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Application 11/352,593
The recovered “first phase” is contacted with any amount of a “first
quantity” of any manner of “aqueous solution” to form a “second mixture”
in a third step which is separated into two phases by any separation means in
a fourth step. The “third phase” contains a majority amount of the solvent
extractant and at least some amount, however small, of the contaminant.
The “fourth phase” comprises a majority amount of the “first quantity of
aqueous solution” and at least some amount of the
1,3-propanediol, wherein the weight ratio of the 1,3-propanediol in the
fourth phase to at least one of the contaminants is greater to any extent than
the weight ratio of 1,3-propanediol to the same contaminant in the
fermentation broth prior to contacting the fermentation broth with the
solvent extractant to form the “first mixture,” regardless of the difference.
Thus, the first separation step separates the majority of the water
containing at least some contaminant from the majority of the solvent
extractant containing at least some of the 1,3-propanediol and some
contaminant. The second separation step separates the majority of the
solvent from the majority of the aqueous solution extractant containing at
least some 1,3-propanediol and some contaminant.
In this scheme, the weight ratio of 1,3-propanediol to the same
contaminant resulting from the first extraction using a specified solvent and
from the second extraction using any aqueous solution can be the same or
different, that is, a reduction in the amount of contaminant via the second
extraction is not required.
There is no limitation on the manner in which the phases are
separated, including the manner in which the 1,3-propanediol is separated
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Application 11/352,593
from the majority amount of the “first quantity of aqueous solution.” There
is no “second quantity of aqueous solution” specified in claim 3.
We find Burch would have disclosed to one of ordinary skill in this art
a process for recovering 1,3-propanediol from a fermentation broth which
can contain glucose and/or glycerol, can involve extraction with organic
solvents, distillation, and column chromatography as known in the art.
Burch, e.g., col. 12, ll. 41-47, citing Matsuyama; see also col. 1,
ll. 11-22, col. 2, ll. 10-16 and 40-46, col. 3, l. 55 to col. 4, l. 12, col. 10,
ll. 5-59, col. 11, l. 15 to col. 12, l. 39, and col. 14, ll. 26-66. “Difficulties to
be overcome [in industrial purification of 1,3-propanediol] include removal
of cell matter form [sic, from] the broth (clarification), concentration of
1,3-propanediol either by extraction or water removal and separation of
residual impurities from the partially purified” 1,3-propanediol. Burch col.
12, ll. 54-60.
“Water reduction of the clarified broth is complicated by the high
solubility of 1,3-propanediol in water,” and extraction from the clarified
broth can be accomplished by, among other things, evaporation/distillation,
membrane technology, extraction by organic solvent and adsorption. Burch
col. 13, ll. 6-11. “Rotary evaporators may be used to initially reduce water
volume in the clarified broth.” Burch col. 13, 12-16. The alternatives
afforded by membrane technology include allowing passage of water and
1,3-propanediol and retaining “other molecules.” Burch col. 13, ll. 17-25.
“Following evaporation and membrane concentration, partially purified
1,3-propanediol” can be extracted with a suitable solvent such as, among
other things, propanol. Burch, col. 13, ll. 28-35. After extraction, refining
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methods can include distillation, wherein the order of evaporation is, among
other things, “water, diols including 1,3-propanediol and finally heavier
materials such as glycerol.” Burch col. 13, ll. 48-54. Burch further
discloses that the syrup from evaporation of clarified broth was distilled, and
distillate cuts containing 1,3-propanediol diluted with water for recovery of
the 1,3-propanediol by anion exchange column and subsequent
microdistillation. Burch col. 23, ll. 29-40.
We find Matsuyama would have disclosed to one of ordinary skill in
this art a process for recovering optically active 3-phenyl-1,3-propanediol
obtained in a fermentation broth from a mixture of enantiomers in the
presence of an energy source such as glucose. Matsuyama, e.g., Abstract
and col. 8, ll. 40-57. The optically active 3-phenyl-1,3-propanediol can be
purified from the broth directly or after broth clarification by conventional
procedures such as extraction with an organic solvent, distillation, or column
chromatography. Matsuyama col. 9, ll. 33-45. In the illustrative Examples,
clarified broth is extracted with ethyl acetate, the extract is dehydrated, and
the resulting syrup dissolved in hexaneisopropyl alcohol. Matsuyama, e.g.,
col. 10, ll. 22-32, and col. 12, ll. 43-53.
A discussion of Ames, Eyal, and Herold is not necessary to our
decision. See In re Kronig, 539 F.2d 1300, 1302-04 (CCPA 1976).
We find that Appellants acknowledge it was known in the prior art to
produce 1,3-propanediol by fermentation and purify this product from the
broth by targeting the impurities, which can be glycerol, 1,2,4-butanetriol,
and glucose, that are chemically similar to 1,3-propanediol. A common
method of purifying 1,3-propanediol is by distillation. Spec. 1:9-24.
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Application 11/352,593
We determine the combined teachings of Burch and Matsuyama, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
claim 3, as we interpreted this claim above, would have been prima facie
obviousness to one of ordinary skill in the fermentation arts familiar with
processes for separating 1,3-propanediol from fermentation broths.
There is no dispute that the combined teachings of Burch and
Matsuyama would have disclosed to one of ordinary skill in this art methods
for separating 1,3-propanediol from fermentations broths, including either
the fermentation broth per se or from fermentation broths that have been
clarified and the amount of water therein reduced, wherein the separation
steps include a solvent extraction step. See Br. 4-5 and 8.
Appellants contend that “[a]lthough Burch may be read to imply that
residual glucose or glycerol may be present in the fermentation product . . . it
does not suggest that extraction can be used to separate 1,3-propanediol
from these impurities.” Br. 4-5. Appellants further point out that Burch
discloses that following solvent extraction, the partially purified
1,3-propanediol can be purified by, among other things, distillation. Br. 5.
Thus, Appellants submit that one of ordinary skill in this art would
understand that “extraction can be used to separate the 1,3-propanediol from
the water that is present in the fermentation broth,” but “there is nothing in
Burch that suggests that extraction can be used to separate 1.3-propanediol
from impurities such as glucose . . . [and] glycerol.” Br. 5. In this respect,
Appellants further submit that Burch’s statement regarding distillation
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Application 11/352,593
would suggest to this person “that extraction could not be relied on to
separate the desired product, 1,3-propanediol, from the impurities glucose
. . . [and] glycerol.” Br. 5 (original emphasis omitted), citing Burch col. 13,
ll. 41-49.
Appellants’ contentions do not successfully rebut the prima facie case.
Burch does teach that after extraction, 1,3-propanediol can be separated from
at least glycerol by distillation. However, such disclosure does not establish
that no glycerol or glucose as well as 1,3-propanediol remained with the
separated extracting solvent. Indeed, as we interpreted claim 3 above, all
that is required is some amount, however small, of the 1,3-propanediol
remaining in the first phase and the weight ratio of this product to any
contaminant, including glycerol or glucose, can be greater to any extent,
however small, than in the fermentation broth. There further is no
requirement for a change in this ratio upon further purification steps
involving the second mixture.
Thus, on this record, there is no claim limitation supporting
Appellants’ contention that the claimed process reliably separates all of the
glycerol and/or glucose from the 1,3-propanediol. To the extent that a
separation of 1,3-propanediol from these impurities to some extent, however
small, is required by claim 3, as we interpreted this claim above, we are of
the opinion that Appellants have done no more than recognize an additional
benefit not disclosed in the prior art. In this respect, it is well settled that
Appellants’ elucidation of the mechanism of an old process or discovery of a
new benefit of that process does not render the old process again patentable
simply because those practicing the process may not have appreciated the
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mechanism or the results produced thereby. See, e.g., In re Spada, 911 F.2d
705, 707 (Fed. Cir. 1990); In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir.
1990); W.L. Gore & Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed.
Cir. 1983) (“[I]t is . . . irrelevant that those using the invention may not have
appreciated the results[,] . . . [otherwise] it would be possible to obtain a
patent for an old and unchanged process.” (citations omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Burch,
Ames, Matsuyama, Eyal, and Herold with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 3 through 10, 16 through 24, and
27 through 32 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED

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